DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 11/12/2025 is acknowledged.
Claims 20-32 and 36-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/12/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 3/30/2023. These drawings are accepted.
Status of Claims
Claims 1-5, 7-9, 13, 15, 17-19, and 34 are as originally filed, Claims 6, 10-12, and 16 are cancelled, Claims 14, 33, and 35 are as previously presented, and Claims 20-32 and 36-38 are withdrawn.
Claim Objections
Claim 19 is objected to because of the following informalities: “(and)” should be deleted or “or (and)” should be “and/or” in line 3. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 7-9, 13-15, and 17-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the main elementary composition" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the content of element T" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 in lines 12-17 and 24-30 recite limitations that are a redundant with the limitations above, respectively, in the claim and provide no further limitations. Correction is required.
Claim 2 recites the limitation "the solidification methods" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “T is the collection of O, H, N, P, S, F, and Cl elements,” and “T includes O.” It is not clear which limitation are within the metes and bounds of the claim. In this case, “T” may include O in the former, and “T includes O” is redundant.
Claim 8 recites the limitation "the number of mono-crystalline particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites “the total number of the particles.” It is not clear if “particles” refers to the mono-crystalline particles or dispersed particles.
Claim 9 recites the limitation "the first and the second raw materials" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS - Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites “T is the collection of O, H, N, P, S, F, and Cl,” but Claim 1 recites “T is an impurity element including oxygen.” Claim 3 recites a broader limitation than that recited in Claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-9, 13-15, and 17-19 are rejected under 35 U.S.C. 103 as being obvious over CN 112276101 A, based on the machine translation.
CN 112276101 (CN ‘101) teaches preparing an alloy strip composed of a matrix phase and a dispersed particle phase by melt solidification (abstract). The first step is to melt an initial alloy raw material, obtain an initial alloy melt containing an impurity element T, wherein T comprises O, H, N, P, S, F, Cl, I, and Br.
Combination 3
Initial raw material
AaMbTd
24.9% ≤ a ≤ 55.9%
40% ≤ b ≤ 75%
0 ≤ d ≤ 10%
a ≈ a0
b ≈ b0
d ≈ c0
A and M both include Ge (page 3)
M further includes B, Bi, Fe, Ni, Cu, Ag, Si, Cr, and V
First phase particle
Mx1Tz1
98.5% ≤ x1 ≤ 100%
0 ≤ z1 ≤ 1.5%
x1 ≈ a1 + b1
z1 ≈ c1
Second phase matrix
Ax2Tz2
80% ≤ x2 ≤ 100%
0 ≤ z2 ≤ 20%
x2 ≈ b2
z2 ≈ c2
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. The melt is solidified with a matrix phase and a dispersed particle phase. The melting point of the matrix phase is lower than the dispersed particle phase. T is redistributed in the dispersed particle phase and the matrix phase. The matrix is removed, and the dispersed particle phase remains (pages 2 and 3). A and M do not form intermetallic compounds (pages 2-4). The matrix phase is the coating body, which reads on “wrapping,” and the dispersed particle phase is the endogenous powder (page 7). Since both A and M include Ge, M reads on containing more than one element including Ge. CN ‘101 reads on a1 + b1 + c1 = 100%, since the sum of x1, y1, and z1 is 100%. CN ‘101 reads on b2 + c2 = 100%, since the sum of x2, y2, and z2 is 100%. CN ‘101 reads on c2 > c1 > 0 as stated above. CN ‘101 reads on b1 > 0, since 0.1% ≤ y ≤ 30%. T includes at least O. Step 2 is solidifying the initial alloy melt into a strip.
Regarding Claim 2, the material is in the shape of a strip by belt throwing method or continuous casting (page 4). “Lath” is a type of strip, and “belt throwing” is synonymous with melt spinning.
Regarding Claim 3, T is at least O, H, N, P, S, F, Cl, I, and Br and 0 ≤ d ≤ 10% (page 2), which reads on 0 < c1 ≤ 1.5%.
Regarding Claim 4, M further includes at least one of Cr, V, Fe, Ni, Cu, Ag, Cr, and V, and A further includes at least one of Zn, Mg, Pb, In, La, K, Na, and Li (page 7).
Regarding Claim 5, M includes V and Cr and also includes Cu (page 7).
Regarding Claim 7, atomic percent of at least Ge in Mx1 overlaps the range of greater than zero and less than or equal to 15%.
Regarding Claim 8, the number of single crystal particles in the dispersion particles is not less than 60% in all the dispersion particle number (page 5).
Regarding Claim 9, the raw powder with first and second raw materials is as follows (pages 6 and 7):
Combination 3
Raw powder
Mx1Tz1
98.5% ≤ x1 ≤ 100%
0% ≤ z1 ≤ 1.5%
x1 ≈ d1
z1 ≈ e1
Coating body
Ax2Tz2
80% ≤ x2 ≤ 100%
0 ≤ z2 ≤ 20%
x2 ≈ d2
z2 ≈ e2
Regarding Claim 13, the volume percentage of the dispersed particle phase is not more than 50 vol% (page 5).
Regarding Claim 14, the endogenous metal powder is released from the coating body (page 10).
Regarding Claim 15, the matrix phase is removed by acid reaction, alkali reaction, and vacuum volatilization (page 6).
Regarding Claim 17, the powder size is 2 nm to 3 mm (page 6).
Regarding Claim 18, the spherical high purity powder is produced by plasma spheroidizing treatment (page 7).
Regarding Claim 19, the high purity powder is sieved before plasma spheroidizing treatment (page 7).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 7, 14, 15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,409,494 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. US ‘494 claims in Claim 1 a method for preparing a powder material comprising a step 1 of melting initial alloy raw materials to obtain an initial alloy melt. The alloy powder comprises a first phase and a second phase where the first-phase particles are wrapped in the second-phase matrix. The impurity elements are enriched in the second-phase matrix during atomizing solidification, which reads on endogenous precipitation. Step 2 is solidifying the initial alloy melt. The constituent elements are as follows with respect to the instant claims (Claims 3 and 4):
Combination 3
Initial raw material
AaMbTd
0.5% ≤ a ≤ 99.5%
0.5% ≤ b ≤ 99.5%
0 ≤ d ≤ 10%
a ≈ a0
b ≈ b0
d ≈ c0
A and M both include Ge
M further includes W, Cr, Mo, V, Ta, Nb, Zr, Hf, and Ti
First phase particle
Mx1Tz1
88% ≤ x1 ≤ 99.9%
0 ≤ z1 ≤ 2%
x1 ≈ a1 + b1
z1 ≈ c1
Second phase matrix
Ax2Tz2
70% ≤ x2 ≤ 100%
0 ≤ z2 ≤ 30%
x2 ≈ b2
z2 ≈ c2
US ‘494 reads on 0 < c1 < c0 < c2, since 0 < z1 < d < z2 and Tz1 < Td < Tz2. M and A are metal elements (Claim 3); since both A and M include Ge, M reads on containing more than one element including Ge. US ‘494 reads on a1 + b1 + c1 = 100%, since the sum of x1, y1, and z1 is 100%. US ‘494 reads on b2 + c2 = 100%, since the sum of x2, y2, and z2 is 100%. US ‘494 reads on c2 > c1 > 0 as stated above. US ‘494 reads on b1 > 0, since 0.1% ≤ y ≤ 30%. T includes at least O (Claim 2). The melting point of the second phase as a matrix phase is lower than that of the first phase, which reads on the melting point of the endogenous alloy powder being higher than that of the wrapping body. Regarding the limitation set forth in instant Claim 1, lines 23-31, US ‘494 does not recite forming intermetallic compounds but does recite the processing conditions to prepare the claimed alloy powder and wrapping body. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP § 2112.01. Thus, no patentable distinction is seen between a process as presently claimed and a process as defined in the claims of US ‘494.
Regarding Claim 3, US ‘494 claims T is at least O, H, N, P, S, F, Cl and 0 ≤ d ≤ 10% (Claim 3).
Regarding Claim 7, US ‘494 reads on b1 of up to 15%.
Regarding Claim 14, US ‘494 claims removing the second-phase matrix (Claim 7).
Regarding Claim 15, US ‘494 claims an acid reaction for removal, alkali reaction for removal, vacuum volatilization for removal, and oxidation-powdering peeling removal (Claim 7).
Regarding Claim 17, US ‘494 claims the particle size is 3 nm to 7.9 mm (Claim 8).. However, one carrying out a process in accord with the claims of US ‘494 would in fact carry out a process fully within the scope of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733